Appeal against refusal to register the 'DISYS' trademark under Section 11(1) on grounds of similarity to a cited mark DISYSO. Finding the refusal order non-speaking and unresponsive to contentions on usage, distinctiveness and phonetic dissimilarity, the court quashed it and directed fresh consideration.
This page shows the compact analysis of this judgement. The full analysis — procedural history, issue-by-issue holdings with ratio and obiter, advocates, and paragraph-level evidence for every claim — is being added to the record in batches and will appear here when this judgement has been through it.
CMA (TM) No.2 of 2024
THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 17.12.2024
CORAM:
THE HON'BLE MR. JUSTICE ABDUL QUDDHOSE
CMA (TM) No.2 of 2024
Disys India Private Limited Neville Towers, Module 3 & 5, Ramanujam IT City, Rajiv Gandhi Salai (OMR), Taramani, Chennai-600 113. .... Appellant
vs The Registrar of Trademarks, The Office of the Trademark Registry, Intellectual Property Building, G.S.T. Road, Guindy, Chennai – 600 032. .... Respondent
Prayer : Civil Miscellaneous Appeal filed under Section 91 of the trademarks act, 1999 for the following reliefs :-
i) Allow the present Appeal and issue and order setting aside the Impugned Order dated 3.11.2023 for being unjust, and erroneous;
ii) Issue direction to the Respondent to grant the trademark on the trademark application No. 5181506.
For Petitioner : Ms.R.S. Pornima For Respondent : Mr.A.R.Sakthivel SPCGSC
1/6
CMA (TM) No.2 of 2024
JUDGMENT
This appeal has been filed challenging the impugned order dated 03.11.2023 passed by the respondent refusing to grant trademark registration for the trademark 'DISYS' under Section 11(1) of the Trademarks Act, 1999.
'DISYS'.
this Court to the trademark application filed by the appellant before the respondent and would submit that as seen from the same, the appellant has been using the trademark 'DISYS' from 2012 onwards.
this Court to the sales turnover of the appellant from 2012-13 onwards,
2/6
CMA (TM) No.2 of 2024
as seen from the Chartered Accountant's certificate, dated 13.12.2024
and would submit that by the long usage of the trademark 'DISYS' , the appellant has acquired distinctiveness for its trademark 'DISYS' . Therefore, according to the learned counsel for the appellant by total non application of mind by referring to a cited mark DISYSO, which is not in use presently, the respondent has refused to process the trademark application submitted by the appellant for its trademark 'DISYS' .
prove that they have been using the trademark 'DISYS' from 2012 onwards.
3/6
CMA (TM) No.2 of 2024
registration for the appellant's trademark 'DISYS' , the contentions of the appellant as raised in this appeal have not been considered. Only on the ground that there exists a phonetically similar mark DISYSO in the market, the respondent has refused to grant trademark registration for the appellant's trademark 'DISYS' under section 11(1) of the Trademarks Act, 1999, which deals with relative grounds of refusal for the grant of trademark registration. As seen from the impugned order, the alleged non usage of the cited mark as claimed by the appellant in this appeal has not been considered. The sales turnover certificate produced by the appellant before this Court also discloses that the sales turnover of the appellant from 2012-13 which has been increasing every year, has also not been considered. The appellant also claims that DISYSO, the cited mark is not phonetically similar to the appellant's trademark 'DISYS' and therefore, it cannot be treated as a deceptively similar trademark. By a non speaking order, the impugned order, dated 03.11.2023 has been passed by the respondent. Being a non speaking order, with regard to the contentions raised by the appellant in this appeal, necessarily the impugned order has to be quashed and the matter has to be remanded back to the respondent for fresh consideration of the appellant's trademark application.
4/6
CMA (TM) No.2 of 2024
17.12.2024
Index: Yes/ No Speaking order / Non speaking order Neutral citation : Yes / No vsi2
5/6
CMA (TM) No.2 of 2024
ABDUL QUDDHOSE, J.
vsi2
To : The Registrar of Trademarks, The Office of the Trademark Registry, Intellectual Property Building, G.S.T. Road, Guindy, Chennai – 600 032.
CMA (TM) No.2 of 2024
17.12.2024
6/6
2 issues framed by the court
Was the respondent's refusal to register the 'DISYS' mark under Section 11(1), based on phonetic similarity to a cited unused mark, justified?
Should the non-speaking refusal order be quashed and the application reconsidered afresh?
2 provisions across 1 enactments
Disys India Private Limited
The Registrar of Trademarks
Abdul Quddhose
As recorded by the court registry
Judgements on the same questions, provisions and authorities, from every court
